Provisional & Non-Provisional Patent Applications

July 7, 2016

Katherine A. Eppley, Esq., University of Akron School of Law

What is a U.S. patent? A patent is a right granted by the U.S. government to the owner of an invention that is useful, novel, non-obvious over the prior art, and otherwise eligible for patent protection. The owner of a U.S. patent may exclude others from practicing the invention for about 20 years after the filing date of the application which gave rise to the patent. A patent is a common form of “intellectual property”.

What does an inventor do when he/she has an invention? One of the first steps an inventor can take to protect his or her invention is to consult with a patent attorney regarding the patentability of the invention and the subsequent steps needed to obtain U.S. patent protection by way of a U.S. patent application. Often, inventors will first file what’s called a “provisional” patent application, followed by a “non-provisional” patent application within one year of filing the provisional.

What is the difference between a provisional patent application and a non-provisional patent application? A provisional patent application is basically an optional year long place-holder until you are ready to file your non-provisional application. The provisional application is never published and it is never examined by a Patent Examiner. It simply establishes a priority date which is used during prosecution of the following non-provisional patent application to determine whether the alleged invention is patentable over the “prior art”. Prior art is basically any information publicly available before the priority date of a patent application such as scientific articles, other patent applications & patents, and publicly made presentations. In order to obtain patent protection, you must file a non-provisional patent application. Unlike the provisional application, a non-provisional patent application is published and examined by a Patent Examiner, and may ultimately lead to the issuance of a U.S. Patent.

U.S. Patent

What happens once my provisional patent application expires? When a provisional patent application expires before filing a non-provisional, the inventor simply lose the benefit of the provisional’s priority date if the inventor wishes to continue pursuing patent protection. This means that you may file another patent application, however you are unable to claim that original date. When the Examiner reviews your new application, he/she may use any prior art that is dated before your new filing date to determine patentability. There is no option to “back-date” to your provisional filing date if the provisional has expired before filing a non-provisional.

If a provisional application is completely optional, what is the benefit of filing one before you file a non-provisional? As mentioned above, the provisional patent application never ripens into a patent, however may inventors use the year-long provisional window to continue performing market research. The extra window of time can be used to make strategic business decisions as to whether to pursue the patent at all, given the fact that filing and prosecuting a non-provisional patent application is a sizable financial investment. The filing fee for a provisional patent application is comparatively very low. Using the provisional option, the inventor can secure the earliest priority date as possible, while still taking some time to decide how to proceed with their invention. The inventor cannot continue developing the invention itself and later add new inventive features into the same application or subsequently filed non-provisional application. See more on this below.

Can an inventor use the 1 year provisional time period to add new inventive features to the invention? Although the inventor can certainly continue inventing, he/she can never add what’s called “new matter” to any patent application that has already been filed and still use the earlier priority date to protect that new matter. If the inventor has developed additional inventive features for the same invention, he/she will have to file a new application which will have a new priority date.

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